Law.com Subscribers SAVE 30%

Call 855-808-4530 or email [email protected] to receive your discount on a new subscription.

Overpleaded Opposition Supports DJ Motion

By Jane Shay Wald

Can a Notice of Opposition in the U.S. Patent and Trademark Office ('PTO') Trademark Trial and Appeal Board ('TTAB') give rise to an actual controversy under the Declaratory Judgment Act to support a trademark Applicant's federal declaratory judgment ('DJ') action against the Opposer? Generally, it can't ' or more accurately, it doesn't. But in Neilmed Products, Inc. v. Med-Systems, Inc., No. C 06-00964 (N.D. Cal. Jan. 10, 2007), the Northern District of California found that the Notice of Opposition pleaded detailed factors relevant to liability for trademark infringement and dilution. This enthusiastic overpleading did far more than state a claim as to why the applicant's mark should not be allowed to register, which is the TTAB's sole jurisdiction. It gave Applicant a reasonable basis to believe Opposer would sue it for infringement, thereby providing the jurisdictional basis for a DJ action.

The Declaratory Judgment Act, 28 U.S.C. '2201 permits a federal court to 'declare the rights and other legal relations' of parties to 'a case of actual controversy.' An actual controversy has been viewed as requiring the DJ plaintiff to have a reasonable apprehension that it will be subject to liability.

This premium content is locked for Entertainment Law & Finance subscribers only

  • Stay current on the latest information, rulings, regulations, and trends
  • Includes practical, must-have information on copyrights, royalties, AI, and more
  • Tap into expert guidance from top entertainment lawyers and experts

For enterprise-wide or corporate acess, please contact Customer Service at [email protected] or 877-256-2473

Read These Next
Bankruptcy Sales: Finding a Diamond In the Rough Image

There is no efficient market for the sale of bankruptcy assets. Inefficient markets yield a transactional drag, potentially dampening the ability of debtors and trustees to maximize value for creditors. This article identifies ways in which investors may more easily discover bankruptcy asset sales.

Judge Rules Shaquille O'Neal Will Face Securities Lawsuit for Promotion, Sale of NFTs Image

A federal district court in Miami, FL, has ruled that former National Basketball Association star Shaquille O'Neal will have to face a lawsuit over his promotion of unregistered securities in the form of cryptocurrency tokens and that he was a "seller" of these unregistered securities.

Why So Many Great Lawyers Stink at Business Development and What Law Firms Are Doing About It Image

Why is it that those who are best skilled at advocating for others are ill-equipped at advocating for their own skills and what to do about it?

Blockchain Domains: New Developments for Brand Owners Image

Blockchain domain names offer decentralized alternatives to traditional DNS-based domain names, promising enhanced security, privacy and censorship resistance. However, these benefits come with significant challenges, particularly for brand owners seeking to protect their trademarks in these new digital spaces.

Coverage Issues Stemming from Dry Cleaner Contamination Suits Image

In recent years, there has been a growing number of dry cleaners claiming to be "organic," "green," or "eco-friendly." While that may be true with respect to some, many dry cleaners continue to use a cleaning method involving the use of a solvent called perchloroethylene, commonly known as perc. And, there seems to be an increasing number of lawsuits stemming from environmental problems associated with historic dry cleaning operations utilizing this chemical.